Answer ... The following sources of patent law apply in Switzerland:

• the Federal Act on Patents for Inventions;
• the Patents Ordinance;
• the Federal Act on Patent Attorneys;
• Article 1 of the Law of Patent Attorneys of 9 December 1992 (LGBI 1993 Nr 43); and
• the Federal Act on the Federal Patent Court.

Switzerland is a code law country and thus court decisions do not constitute binding precedent.

Answer ... The inventor, its successor in title or a third party owning the invention has the right to grant of a patent. Where several inventors have made an invention jointly, they also have this right jointly. Where two or more inventors have made an invention independently of each other, the person that files a patent application in Switzerland first or whose application has the earliest priority date has this right.

Answer ... The patent confers on its holder the right to prohibit others from commercially using the invention. ‘Use’ includes, in particular, manufacture, storage, offer for sale, placement on the market, import, export and carriage in transit, as well as possession for any of these purposes. Carriage in transit may be prohibited only if the rights holder is permitted to prohibit importation into the country of destination.

Answer ... A patent owner can enforce its rights by filing a civil action and/or a criminal complaint. The Federal Patent Court is responsible for hearing cases of infringement. The following parties may be held liable under civil and criminal law:

• anyone that uses a patented invention unlawfully. Imitation is also deemed to constitute use;
• anyone that refuses to notify the relevant authority of the origin and quantity of products in its possession which are unlawfully manufactured or placed on the market, and to name the recipients and disclose the extent of any distribution to commercial and industrial customers;
• anyone that removes the brand from products or their packaging without authorisation from the rights holder or its licensee; and/or
• anyone that abets any of the above offences, participates in them or aids or facilitates their performance.

Before filing suit, the rights holder should warn the defendant by sending a cease-and-desist notice. This may persuade the defendant to cease the infringement and come to the table to discuss a settlement. If this is unsuccessful, the next stage is the filing of an infringement suit before the Federal Patent Court. However, this can become quite costly, not least due to the need for expert opinions. Fortunately, the costs are typically high for both parties and this encourages the parties to settle early.

The Federal Patent Court has exclusive subject-matter jurisdiction over patent infringement and invalidity actions. Federal Patent Court judges are both technically and legally trained, and thus have a significant level of expertise.

Answer ... The maximum enforceable term of a patent is 20 years from the filing date of the application, with a possibility for a further extension if a successful petition for a supplemental protection certificate is filed (which can extend the term for up to five years). The patent will lapse if:

• the rights holder surrenders it by written declaration to the Federal Institute of Intellectual Property (IPI);
• the patent expires; or
• a renewal fee is not paid within the prescribed timeframe.

Answer ... The Federal Institute of Intellectual Property (IPI) based in Bern.

Answer ... Applicants may request an expedited examination procedure (Article 63 of the Patents Ordinance). The fee for an expedited examination procedure is CHF 200. The official fee for filing a patent is CHF 200 for the first 10 claims. The examination fee is CHF 500. The examination fee is due before the start of substantial examination, on invitation and within the timeframe fixed by the IPI. A claims fee of CHF 50 must be paid for each additional claim beyond the 11th claim. Once approved, there is no grant or registration fee. After the fourth year from filing, a renewal fee of CHF 100 must be paid, which increases annually thereafter.

Renewal fees are then due every year on the last day of the month in which the patent application was filed. The fee must be paid within six months of the due date.

Answer ... Patents are granted for new inventions applicable in industry. Anything that may be considered obvious with regard to the state of the art (Article 7, paragraph 2 Federal Act on Patents for Inventions) is not patentable. The human body as such – at all stages of its formation and development, including the embryo – is not patentable. Elements of the human body in their natural environment are not patentable. However, an element of the human body is patentable as an invention if:

• it is produced by means of a technical process;
• a beneficial technical effect is indicated; and
• it is otherwise patentable.

A naturally occurring sequence or partial sequence of a gene is not patentable as such. However, sequences that are derived from a naturally occurring sequence or partial sequence of a gene may be patented if:

• they are produced by means of a technical process;
• their function is specifically indicated; and
• the further requirements (see Article 1 of the Federal Act on Patents for Inventions) are fulfilled.

Inventions whose exploitation would be contrary to human dignity, that disregard the integrity of living organisms or that are in any other way contrary to public policy or morality are not patentable. In particular, no patent may be granted for:

• processes for cloning human beings and the clones obtained thereby;
• processes for forming hybrid organisms by using human germ cells, human totipotent cells or human embryonic stem cells and the entities obtained thereby;
• processes of parthenogenesis by using human germinal material and the parthenogenetic entities obtained thereby;
• processes for modifying the germ line genetic identity of human beings and the germ line cells obtained thereby;
• unmodified human embryonic stem cells and stem cell lines;
• the use of human embryos for non-medical purposes; and
• processes for modifying the genetic identity of animals which are likely to cause them suffering without justification by overriding interests worthy of protection, and animals resulting from such processes.

Also excluded from patentability are:

• methods for treatment by surgery or therapy and diagnostic methods practised on the human or animal body; and
• plant varieties and animal varieties or essential biological processes for the production of plants or animals; however, subject to the reservations in the above paragraph, microbiological and other technical processes and the products obtained thereby, as well as inventions that concern plants or animals, are patentable if their application is not technically confined to a single plant or animal variety.

During the substantive examination, the IPI may find that an invention does not meet the statutory requirements – for example, because:

• it does not solve a problem using technical means;
• it is presented in such a way that a person skilled in the art cannot understand it;
• the claim scope is not clearly understood;
• the claims are not linked by a common inventive concept;
• modifications made go beyond the content of the original technical documents in a way that is not allowed; or
• the documents filed do not meet certain formal requirements.

Answer ... Examination may be accelerated by filing a request for expedited examination and paying a fee of CHF 200 before the start of the examination as to substance, on invitation and within the timeframe specified by the IPI. In part because there is no substantive examination, no Patent Prosecution Highway request is available.

Answer ... No particular claim type is expressly forbidden under Swiss law. On the contrary, unlike before the European Patent Office, the Swiss-type second medical use claim format is expressly allowed under Swiss law.

Answer ... There are no term adjustments for IPI delays. However, the applicant may file a request for a supplementary protection certificate (SPC) and a paediatric SPC. If granted, the term can be extended once for up to five years.

Answer ... Novel and industrially applicable products, processes/methods, substances and compositions that are not yet used for a specific purpose, and processes that are applied in a new field, are patent eligible.

Any substance or composition that forms part of the state of the art as such, but not in relation to a specific use in a surgical, therapeutic or diagnostic method that is distinct from the first medical use specified, is deemed to be new, provided that it is intended for use in the manufacture of a substance or composition that has a surgical, therapeutic or diagnostic purpose.

A patent cannot be granted for:

• acts undertaken within the private sphere for non-commercial purposes;
• acts undertaken for research or experimental purposes in order to learn about the subject matter of the invention, including its uses – in particular, scientific research concerning the subject matter of the invention is permitted;
• acts necessary to obtain marketing authorisation for a medicinal product in Switzerland or in countries with equivalent medicinal product control;
• the use of the invention for teaching purposes at educational institutions;
• the use of biological material for the purpose of the production or discovery and development of a plant variety;
• biological material that is discovered in the field of agriculture due to chance or that is technically unavoidable;
• acts undertaken in the course of medical activities concerning individual persons or animals and involving medicinal products – in particular, the prescription, dispensing or use of medicinal products by legally authorised persons; or
• the direct individual preparation of medicinal products in pharmacies in accordance with a doctor’s prescription or acts concerning medicinal products prepared in this way.

Answer ... Decisions of the IPI in patent matters may be appealed to the Federal Administrative Court in St Gallen, Switzerland.

Answer ... The validity of an issued patent can be challenged before the Federal Patent Court, which has exclusive subject-matter jurisdiction over invalidity actions related to patents (as well as patent infringement actions).

Anyone that demonstrates an interest may bring an action to obtain a declaratory judgment on the existence or non-existence of a circumstance or legal relationship governed by the Patent Act – in particular, on whether a patent is valid or invalid.

Answer ... A patent can be invalidated by filing a timely and successful opposition with the Federal Institute of Intellectual Property (IPI) or by filing an invalidity action with the Federal Patent Court in a permissible language (German, French or Italian). The IPI or the European Patent Office (EPO) (for the Swiss part of a European patent) has exclusive jurisdiction over patent oppositions. The Federal Patent Court has exclusive subject-matter jurisdiction over invalidity actions relating to Swiss patents (as well as patent infringement actions).

Answer ... A patent certificate may be held invalid where:

• it was granted contrary to Article 140b, Article 140c paragraph 2, Article 146 paragraph 1 or Article 147 paragraph 1 of the Federal Act on Patents for Inventions;
• the patent lapses before its maximum term expires (Article 15 of the Federal Act on Patents for Inventions);
• the patent is declared null and void;
• the patent is limited to the extent that the product for which the certificate was granted is no longer covered by the claims; or
• after the lapse of the patent, grounds exist that would have justified the declaration of nullity of the patent under the third point above or a limitation under the fourth point above.

Anyone may bring an action to have a patent certificate declared null and void before the authority (either the IPI or the Federal Patent Court) responsible for declaring the nullity of the patent.

Answer ... The ‘no reasonable doubt’ standard is applied by the Federal Patent Court to prove infringement or invalidity. However, in preliminary injunction proceedings, the rights holder need only make a prima facie case (i.e., more likely than not) of infringement.

Answer ... Opposition proceedings are available to anyone that wishes to challenge a granted patent, if filed within nine months of grant of the patent.

Answer ... Within nine months of publication of the grant notice, anyone may give notice of opposition to the IPI or to the EPO (for the Swiss part of a European patent) regarding a patent which has been granted by it.

Answer ... Within nine months of publication of the entry of the patent in the Patent Register.

Answer ... In an opposition procedure before the IPI, the notice of opposition must be filed in a written reasoned statement and may be filed only on the grounds that the subject matter of the patent is not patentable under Articles 1a, 1b and 2 of the Federal Act on Patents for Inventions, which deal with the human body, gene sequences and exclusions on ethical grounds. These provisions are as follows.

Article 1a: The human body as such – at all stages of its formation and development, including the embryo – is not patentable.

Elements of the human body in their natural environment are not patentable. However, an element of the human body is patentable as an invention if:

• it is produced by means of a technical process;
• a beneficial technical effect is indicated; and
• the further requirements of Article 1 of the Federal Act on Patents for Inventions are fulfilled.

Article 1b: A naturally occurring sequence or partial sequence of a gene is not patentable as such. However, sequences that are derived from a naturally occurring sequence or partial sequence of a gene may be patented as an invention if:

• they are produced by means of a technical process;
• their function is specifically indicated; and
• the further requirements of Article 1 of the Federal Act on Patents for Inventions are fulfilled.

Article 2: Inventions whose exploitation is contrary to human dignity, that disregard the integrity of living organisms or that are in any other way contrary to public policy or morality are not patentable. In particular, no patent may be granted for:

• processes for cloning human beings and the clones obtained thereby;
• processes for forming hybrid organisms by using human germ cells, human totipotent cells or human embryonic stem cells and the entities obtained thereby;
• processes of parthenogenesis by using human germinal material and the parthenogenetic entities obtained thereby;
• processes for modifying the germ line genetic identity of human beings and the germ line cells obtained thereby;
• unmodified human embryonic stem cells and stem cell lines;
• the use of human embryos for non-medical purposes; and
• processes for modifying the genetic identity of animals which are likely to cause them suffering without justification by overriding interests worthy of protection, and animals resulting from such processes.

Also excluded from patentability are:

• methods for treatment by surgery or therapy and diagnostic methods practised on the human or animal body; and
• plant varieties and animal varieties or essential biological processes for the production of plants or animals; however, subject to the reservation in the above paragraph, microbiological and other technical processes and the products obtained thereby, as well as inventions that concern plants or animals, are patentable if their application is not technically confined to a single plant or animal variety.

Answer ... The patent certificate may be found null and void, or valid in whole or part. If the IPI finds in favour of the opposition, in its entirety or in part, it may revoke the patent or maintain it as amended. The decision regarding an opposition is subject to appeal to the Federal Administrative Court in St Gallen, Switzerland.

Answer ... The party arguing invalidity bears the burden of proof. This will be the claimant in an invalidity lawsuit or the defendant in an infringement suit where invalidity is raised as a defence.

To win an invalidity or infringement suit, the claimant must convince the court beyond reasonable doubt that the patent is infringed or invalid, as the case may be. However, in preliminary injunction proceedings, the rights holder need only make a prima facie ‘more likely than not’ case of infringement.

If the invention concerns a process for the manufacture of a new product, every product of the same composition will be presumed to have been made by the patented process, unless proof to the contrary has been provided.

Answer ... A decision to invalidate or hold a patent valid by the Federal Patent Court can be appealed to the Federal Supreme Court.

Answer ... Anything that would make a patent invalid against the defendant will make a patent unenforceable against it. The reason for unenforceability could be that the patent has expired or is invalid; or that the defendant can claim a defence such as exhaustion, experimental or use in clinical testing, or a prior user right. If the claimant knows that its patent as a whole is invalid for any reason and it is likely that the Federal Patent Court will learn of this flaw in litigation, this will make the patent unenforceable against all third parties.

A patent is also not enforceable if it pertains to:

• acts undertaken within the private sphere for non-commercial purposes;
• acts undertaken for research or experimental purposes in order to learn about the subject matter of the invention, including its uses – in particular, scientific research concerning the subject matter of the invention is permitted;
• acts necessary to obtain marketing authorisation for a medicinal product in Switzerland or in countries with equivalent medicinal product control;
• the use of the invention for teaching purposes at educational institutions;
• the use of biological material for the purpose of the production or discovery and development of a plant variety;
• biological material that is discovered in the field of agriculture due to chance, or that is technically unavoidable;
• acts undertaken in the course of medical activities concerning individual persons or animals and involving medicinal products – in particular, the prescription, dispensing or use of medicinal products by legally authorised persons; or
• the direct individual preparation of medicinal products in pharmacies in accordance with a doctor’s prescription or acts concerning medicinal products prepared in this way.

Agreements which seek to limit or revoke the exclusions outlined above are null and void.

Answer ... There are none. Unlike in the United States, a patent cannot be deemed unenforceable for inequitable conduct of the patent holder or his exclusive licensee.

Answer ... None.

Answer ... When a patented product, process/method, substance or composition not yet used for a specific purpose, or a process applied in a new field, is placed on the Swiss market whose technical features are fully reflected in at least one claim of the patent or with application of the doctrine of equivalents to each and every element of the patent claim, a case of patent infringement can be made, provided that the patent is otherwise valid and enforceable. Indirect or contributory patent infringement is recognised in Switzerland and requires:

• an act of direct patent infringement by a third party; plus
• a causal link between the actions of the third party and the infringement.

Anyone that abets, participates in, aids or facilitates patent infringement may be held liable under civil and criminal law (see Articles 66(a)–(c) of the Federal Act on Patents for Inventions). Therefore, anyone that induces or contributes to a patent infringement is also potentially liable. This includes those that supply (or offer to supply) elements that are adapted for use in the invention. It is irrelevant where these suppliers are. Even a foreign supplier of elements brought into Switzerland (where the product is made and/or assembled) can equally contribute to patent infringement and therefore be liable. On the other hand, the elements made by a Swiss manufacturer which contributes to patent infringement that are shipped outside of Switzerland do not make a case of contributory infringement.

Answer ... The doctrine of equivalents applies in extending the scope of a claim beyond the strict literal meaning of the words of the claim. Consequently, any element deemed an equivalent to an element specified in that claim may substitute for that element in determining infringement. Therefore, the scope of protection conferred by a patent claim is not limited to the identical use of the features of the construed claim by the defendant’s product or process, but also extends to equivalent elements if the following conditions are met:

• The equivalent element has the same effect;
• It is obvious to the skilled person that it has the same effect; and
• The skilled person would have considered the equivalent element as having the same value.

Answer ... Generally, a party cannot be held liable if the patent infringement takes place outside of Switzerland, although Swiss companies may be subject to the Federal Patent Court for a determination of infringement in other countries. In such case, the court has jurisdiction to grant extraterritorial injunctions against defendants domiciled in Switzerland.

Answer ... There are none before the Federal Patent Court. Of course, if a case of counterfeiting can be made out, this egregious conduct can be punished with incarceration for up to 5 years

Answer ... Any rights holder or exclusive licensee of at least one claim of a granted Swiss patent.

Answer ... An infringement action should be brought soon after learning of the infringing activity in order to avoid providing a defence of reliance for failure to file the action. In any case, any actions by the claimant should be avoided that could be used by the infringer as a defence, such as that the claimant gave the defendant a reasonable basis to believe that the patent would not be enforced against it.

Answer ... The claimant must provide prima facie evidence of infringement in order to initiate a suit.

Answer ... A patent infringement action may be brought only in the Federal Patent Court.

Answer ... For civil actions, there are no other venues other than the Federal Patent Court. For criminal actions, there are many possible venues, as the criminal courts of each canton have jurisdiction over actions which take place in their jurisdiction.

Answer ... The panel of trained judges is the fact finder in an infringement action. The judges of the Federal Patent Court include at least one with a technical background and one with legal background.

Answer ... No, for civil actions, the fact finder does not change based on venue, as there is only one venue: the Federal Patent Court.

Answer ... The complaint, called a statement of claim, is filed by the claimant. A statement of defence may be filed by the defendant; and optionally, a counterclaim is filed. The Federal Patent Court calls the parties to an instruction hearing where the parties explain their general positions, which may be used by the court to mediate a settlement. If the case is not settled, a second volley of written briefs are exchanged and the lead technical judge issues an expert opinion for comment. The parties are then summoned to the main hearing, after which the court will issue its decision. If the decision is that there was an infringement, the parties are allowed to file their comments as to damages, which the court will consider in determining the appropriate relief, such as monetary relief, which should be granted.

If a defendant in a patent infringement suit defends on the grounds that the Swiss patent is null and void, the court may allow it an appropriate time limit to file a nullity action. If the patent has not been examined with regard to novelty and inventive step, and if the court has any doubt as to the validity of the patent, or if the person under investigation has provided prima facie evidence that the defence of nullity of the patent appears justified, the court may allow the injured party an appropriate period within which to file a declaratory judgment action that the patent is valid.

Where the action is timely filed, any criminal proceedings will be suspended until a final decision on the action has been issued. The statute of limitations for prosecution is suspended during this time.

Answer ... The remedies available for patent infringement include:

• a permanent injunction;
• monetary remedies (compensation for losses, reasonable royalty, lost profits, unjust enrichment, reasonable legal expenses);
• delivering up or destruction of the infringing goods;
• publication of the decision;
• recall orders; or
• a declaration of infringement or validity.

In Switzerland, a permanent injunction is the usual remedy against patent infringement. Unlike in the United States, public policy considerations are not taken into account in the determination as to whether to grant a permanent injunction. It is a remedy that is typically granted at the request of the claimant after infringement is determined by the court. Interestingly, non-practising entities are not handicapped in Switzerland.

Answer ... Appeals from the Federal Patent Court are heard by the Federal Supreme Court, which reviews the case as a matter of law. The facts are accepted by the Federal Supreme Court as established by the Federal Patent Court.

Answer ... Limited discovery is available, but nothing like what is allowed in US pre-trial discovery.

Answer ... Pre-trial discovery powers in Switzerland include the court’s ability to order seizure of allegedly infringing product or associated process machinery, based on a prima facie showing of infringement (whether actual or imminent), before the filing of the suit. There is no need to show irreparable harm or legitimate interest.

In addition, before the suit is filed, a party – backed by an allegation of relevant facts and a statement of relevance of the evidence sought – can ask the court to order the provisional seizure of evidence if:

• it is prima facie established that this evidence is likely to be destroyed or abandoned; or
• there is another legitimate interest for the seizure, such as in determining whether a future suit has merit.

During the court proceedings, the court can order a party to produce specific documents in a party’s custody if shown to be prima facie relevant to the outcome of the case. Consequently, fishing expeditions, being devoid of any reasoned support, are excluded. A party’s refusal to comply with the court order can be taken into account when weighing the evidence. The court is also vested with the power to compel third parties to produce specific documents if it is shown that they are relevant to the outcome of the case. This also extends to accounting and sales documents needed to establish damages.

Due to the urgency of seeking a preliminary injunction, only evidence that is readily available is admitted in these proceedings, typically documentary evidence. There is no time to hear from witnesses or experts.

Answer ... Any evidence sought must be based upon prima facie arguments showing the relevance of the evidence to the outcome of the case. So long as a prima facie argument can be provided and a reason given as to why the party only became aware of the possible existence of pertinent evidence, further discovery may be permitted.

Answer ... The Federal Patent Court construes the claims, defining their terms, at trial, after a decision on validity is decided.

Answer ... Claims are interpreted according to Article 51 of the Swiss Federal Patent Act, which is essentially identical to Article 69 of the European Patent Convention (EPC) and the Protocol on the Interpretation of Article 69 EPC of 5 October 1973 as revised by the Act Revising the EPC of 29 November 2000. The doctrine of equivalents also applies in infringement actions in Switzerland. An infringement under the doctrine of equivalents can be made out if:

• the arguably equivalent substituted features objectively have the same technical function;
• the substituted features and their function are obvious to a person skilled in the art based upon the patent’s teachings; and
• considering the patent claim, a person skilled in the art would consider the arguably equivalent features to be an equivalent solution.

See question 6.2.

Answer ... The file history is not generally considered in construing the claims. The claims are construed as they would be understood by a person skilled in the art, considering the patent specification (the written description and the drawings). The doctrine of equivalents is applicable to expand the scope of the claims. See questions 8.2 and 6.2.

Answer ... Yes, both preliminary and permanent injunctions are available.

In preliminary injunction proceedings, any person may request the court to order:

• measures to secure evidence, to preserve the existing state of affairs or to provisionally enforce claims for injunctive relief and remedies;
• a precise description to be made of:
• • the allegedly unlawful processes used;
  • the allegedly unlawful products manufactured; and
  • the means used to manufacture them; or
• the seizure of these objects.

If trade secrets are involved, the court will take the necessary measures to safeguard them.

Answer ... A permanent injunction is one of the typical remedies granted by the Federal Patent Court. The party seeking an injunction need not show irreparable harm or another legitimate interest. In preliminary injunction proceedings, it is sufficient for the rights holder to make a prima facie case of infringement (the ‘more likely than not’ standard). For a permanent injunction, the standard is beyond reasonable doubt.

Answer ... Yes, damages are available in a patent infringement suit. Similar to common tort actions, monetary remedies in patent actions are assessed on the basis that the claimant must be placed in the position it would have been in if no infringement had occurred. In addition, the court can order the production of a defendant’s accounting documents and information in order to help determine the extent of damages caused by the infringing activities.

Answer ... The damages available for patent infringement include:

• compensation for losses;
• reasonable royalty;
• lost profits;
• unjust enrichment; and
• reasonable legal expenses, including costs associated with combating the infringement in the minds of the consuming public.

In more detail, the claimant can request one of the following:

• compensation for the pecuniary losses incurred due to the infringement;
• payment of the infringer’s profits; or
• payment for any unjust enrichment by the infringer due to the infringement (e.g., a reasonable royalty).

The claimant can also seek damages for losses arising from the infringement. These losses may include:

• legal expenses incurred before filing suit;
• expenses directed at mitigating damages – for example, advertising expenses for minimising confusion among consumers; and
• related losses caused by the infringement, such as the sale of ancillary products or services.

Generally, the quantum of monetary remedies is assessed at a later stage from liability. The damages are awarded only after the decision regarding infringement is made final. Appealing the decisions tolls the need to pay damages. The basis for the calculation of damages is known as the ‘indivisible unit offered in trade’, which refers to the entire product as offered to the consumer.

Answer ... Preliminary injunction proceedings are summary proceedings, which means that shorter deadlines and a reduced level of proof (prima facie standard) apply. A permanent injunction requires having made a case of infringement beyond reasonable doubt.

Answer ... No, it is not possible to increase or multiply damages due to a party’s actions, as punitive or exemplary damages are not available. In addition, foreign awards of punitive damages are in principle unenforceable in Switzerland. However, if a criminal complaint for counterfeiting is filed (a separate action from a civil infringement action), the defendant(s) can be found criminally liable and subject to the payment of fines and/or time in prison (up to five years).

Answer ... Generally speaking, sanctions are not available. Even sanctions for delaying proceedings are uncommon, as it is almost impossible to do so.

Answer ... No sanctions are available in civil proceedings before the Federal Patent Court.

Nevertheless, the rights holder may also file a separate criminal complaint for the infringement. However, in the criminal proceedings, the patent holder cannot recover any financial losses. A conviction may result in monetary penalties and/or incarceration for up to five years, provided that it is proven that the infringer is in the business of counterfeiting.

Answer ... Yes, it can obtain reasonable attorneys’ fees.

Answer ... The fees awarded to a successful claimant must be shown to be reasonable and related to the infringement action. They may include fees incurred before the filing of the infringement action.

Answer ... A licensee can obtain essentially all the rights of the patent through the licence contract, including, for exclusive licences, the right to bring an action for patent infringement.

Answer ... Clauses restricting the ability of a licensee to challenge the validity of the licensed patent are permitted under Swiss law, but are becoming increasing problematic.

The licensor generally cannot extend the term of the licence beyond the enforceable life of the patent, unless the parties agree to do otherwise, which is often the case when several patent rights or patent rights together with know-how are licensed in the same agreement.

Except under special circumstances, the licensee cannot require the refund of licence fees paid, because the Swiss courts consider that the mere appearance of validity of the licensed right has economic value, and that the licensee has benefited from these rights during the life of the licence agreement.

The licensor can, through an express provision in the licence agreement, prohibit competition from the licensee after the licence agreement has expired.

The licensor can grant the licensee the exclusive right to sue for infringement of the patent. The licensor can also deny an exclusive licensee the right to sue for infringement. However, unless expressly prohibited, the licensee – whether exclusive or non-exclusive – can join in an action for damages in order to recover its own damages or losses.

The right to sub-license is typically denied a non-exclusive licensee, unless this right is provided by the rights holder in the licence agreement.

The rights holder can define the type of co-ownership in a patent with partners.

For patents, the general presumption is that, subject to an agreement to the contrary, co-owners are owners in common. Nevertheless, unlike in the U.S., for patents, the grant of a licence requires the consent of all co-owners.

Answer ... Yes, there are limits on patent protection due to antitrust laws. The Federal Supreme Court has held that a rights holder that has a dominant position in a market can be liable for an antitrust violation if it enforces its patent in a manner abusive to the concept of antitrust law, such as by preventing otherwise legal parallel importation of the patented product or products made by a patented process, subject to certain conditions. Rights holders that dominate the market may be obligated to grant compulsory licences if the use of the patented technology is indispensable to a third party that wishes to offer the patented product and the rights holder does not have legitimate grounds to refuse the grant of a licence. The Federal Act on Patents for Inventions specifically provides for compulsory licences in the case of antitrust violations.